ST. JUDE MEDICAL, INC. v. ACCESS CLOSURE, INC.

Consonance was not maintained in divisional applications because it contained two or more separately patentable inventions.

Opinion (PLAGER): St. Jude Medical, Inc. (“St. Jude”) owned patents ‘439 (the “Jantzen” patent) and patents ‘375 and ‘616 (the “Fowler” patents) all relating to devices used in sealing vascular punctures. St. Jude filed suit against Access Closure, Inc. (“ACI”) for infringement. The district court concluded the safe harbor provision in 35 U.S.C. § 121 prevented the Jantzen patent from being invalidated and a jury found that ACI infringed the Fowler patents, and that the Fowler patents were not obvious. ACI appealed the safe harbor holding applied to the Janzen patent, the district courts construction of Janzen claims 7 and 8, and the district court’s denial of ACI’s renewed motion for JMOL that the Fowler patents were invalid for obviousness. The safe harbor provision protects patentees whose original patent application gets restricted by the PTO because it contained two or more separately patentable inventions. Safe harbor allows the patentee to file a “divisional” application to separately patent each distinct, “sibling,” idea so long as “consonance” is maintained (i.e. the application of one does not contain the same claims drawn to any other prosecution or application). The Court found that St. Jude did not maintain consonance because a claim in Janzen overlapped with a sibling patent. Therefore, the safe harbor ruling was REVERSED. Because claims 7 and 8 were part of the Janzen patent, the Court held that the claim construction issue was moot. The Court also refuted ACI’s arguments for obviousness because previous teachings did not contemplate the combination of devices found in the Fowler patents. The district court’s refusal to grant ACI’s renewed motion for JMOL was AFFIRMED.